• Callminer, Inc. v. Nice Ltd.Some claims unpatentable
  PTAB · Jun 16, 2021 · IPR2020-00221 · APJ Kevin F Turner · IPR · Final written decision

  Claims 1–10 are unpatentable as obvious under § 103; CallMiner did not show claims 11–17 unpatentable because its petition lacked sufficiently specific § 112(f) structure analysis.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Considering the subject matter of the ’475 Patent, the background technical field, and the prior art, we adopt Patent Owner’s submission on the level of ordinary skill in the art. We agree with Petitioner that the minor change in the level of ordinary skill in the art does not affect whether the cited art demonstrates the patentability of the challenged claims. As such, we determine that a person of ordinary skill in the art the time of the invention would have had (1) a Ph.D. in electrical engineering, computer science, linguistics, or a related field; (2) a Master’s degree in the same with one year of experience implementing systems performing speech analysis; or (3) a Bachelor’s degree in the same with three years of experience implementing systems performing speech analysis.” PO Resp. 8. However, even under Petitioner’s definition of the level of ordinary skill, we reach the same conclusions below regarding patentability of the challenged claims.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Under Phillips, we begin with the language of the claim itself. Phillips, 415 F.3d at 1314 (“the claims themselves provide substantial guidance as to the meaning of particular claim terms”). Here, claim 1 recites “performing an initial processing on the audio signal for locating an at least one event within the audio signal,” and “performing additional processing on a part of the audio signal.” Ex. 1001, 10:43–44, 47–48. It is clear from the claim that the processing events, i.e., initial and additional processing steps, are separate processing steps, although the language of claim 1 does not recite the distinctiveness that Patent Owner asserts, i.e., that there cannot be any overlap in techniques that fall under the different processing steps. The initial processing must “locat[e] an at least one event,” and the additional processing must “provide[e] output related to the audio signal,” per claim 1. Id. Given the language of the claim, including the “comprising” recitation, we are not persuaded that the initial processing could not also provide some output related to the audio signal, of which the location of the event would generally fall under a type of output related to that signal. In other words, we are not persuaded that each processing step is fulfilled by a separate and distinct set of analysis processes.” slip op. at 10

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner

    “We concur with Patent Owner’s assertions that elements of claims 11– 17 should be properly construed under 35 U.S.C. § 112 ¶ 6. We find Dr. Cohen’s testimony to be helpful in that he testifies that the “component” language of claims 11 and 13 are “functional terms,” and although those claims do not use the word “means,” he testifies that “a skilled artisan would need to review the specification to understand the scope and meaning of these terms.” Ex. 2004 ¶ 86. Dr. Stern’s testimony provides citations to the Specification, and attempts to provide the corresponding structure in Petitioner’s “alternative constructions.” See Ex. 1005 ¶¶ 60–61. As such, both parties acknowledge the functional natures of claims 11–17 and suggest the possibility that the claims need to be evaluated under § 112 ¶ 6. Weighing the testimony of both declarants and reviewing the language of independent claim 11 and claims dependent thereon, we are persuaded that those claims recite structures in functional terms such that they recite meansplus-function limitations. We agree that Petitioner’s analysis provides citations to the Specification that are not sufficiently specific or explained to identify the portions of the Specification that describe the corresponding structure. For example, claim 11 recites “initial processing component for,” which Petitioner states has the function of “activating an at least one initial processing engine,” and Petitioner cites to the Abstract, three figures and eleven sections of the ’475 Patent. Pet. 17–18. The citations are wide-ranging but not specific, so that no particular element from the Specification of the ’475 Patent is asserted by Petitioner to be structure invoked. For the next limitation of claim 11, “initial processing engine for,” nearly the same citations are provided with the same lack of specificity. Petitioner cannot be said to have provided specific structures to the functional limitations of claims 11–17 through the descriptions provided in the Petition. See Pet. 17– 22. As such, we determine by a preponderance of evidence that the Petition fails, under 37 C.F.R. § 42.104(b)(3), to challenge claims 11–17 with sufficient specificity. Thus, Petitioner has failed to establish based on a preponderance of evidence that claims 11–17 are unpatentable as obvious under 35 U.S.C. § 103. Given this, we limit our obviousness analysis to consideration of claims 1–10 below.” slip op. at 22

  • BurdenNot shown unpatentable

    “We agree that Petitioner’s analysis provides citations to the Specification that are not sufficiently specific or explained to identify the portions of the Specification that describe the corresponding structure. For example, claim 11 recites “initial processing component for,” which Petitioner states has the function of “activating an at least one initial processing engine,” and Petitioner cites to the Abstract, three figures and eleven sections of the ’475 Patent. Pet. 17–18. The citations are wide-ranging but not specific, so that no particular element from the Specification of the ’475 Patent is asserted by Petitioner to be structure invoked. For the next limitation of claim 11, “initial processing engine for,” nearly the same citations are provided with the same lack of specificity. Petitioner cannot be said to have provided specific structures to the functional limitations of claims 11–17 through the descriptions provided in the Petition. See Pet. 17– 22. As such, we determine by a preponderance of evidence that the Petition fails, under 37 C.F.R. § 42.104(b)(3), to challenge claims 11–17 with sufficient specificity. Thus, Petitioner has failed to establish based on a preponderance of evidence that claims 11–17 are unpatentable as obvious under 35 U.S.C. § 103. Given this, we limit our obviousness analysis to consideration of claims 1–10 below.” slip op. at 22

  Patent outcomesUS 7,599,475 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,599,475
• Unified Patents Inc. v. S.I.Sv.El. Societa Italiana Per Lo Sviluppo Dell’Elettronica S.P.A.Some claims unpatentable
  PTAB · Jun 25, 2020 · IPR2019-00471 · APJ Terrence W Mcmillin · IPR · Final written decision

  Claims 1, 4, 8, 11–13, and 16–18 are unpatentable as obvious over Easty and Hendricks, and Easty, Hendricks, and Kittaka; claim 10 was not shown unpatentable.

  RulingsFinal written decision

  • Skill levelOther

    “that a person of ordinary skill would have had “(i) an undergraduate degree in computer science, computer engineering, or similar technical field; and (ii) one to two years of experience in analysis, design, or development related to recommender systems and collaborative filtering, with additional education substituting for less experience and vice versa.” Pet. 6 (citing Ex. 1003 (Terveen Decl.) ¶¶ 22–24). Patent Owner contends the applicable level of ordinary skill in the art would have had “(i) a B.S. in Computer Science or a closely related field with three or more years of experience in either embedded systems or recommendation systems or (ii) at least an M.S. in Computer Science. Additional education or experience may serve as a substitute for these requirements.” PO Resp. 19 (citing Ex. 2001 (Pazzani Decl.) ¶ 24) (internal citations omitted). Although these contentions differ slightly in the amount of required experience, they are very similar, and neither party contends that these differences are material to any issue in dispute.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner

    “We are also guided by the principle that we only construe claim terms if, and to the extent that, it is necessary. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). In the Petition, Petitioner proposes constructions for “implicit filtering” and “explicit filtering.” Pet. 8–9. Patent Owner does not dispute Petitioner’s proposed constructions. Prelim. Resp. 33. Patent Owner does not dispute Petitioner’s showing that the cited art teaches “implicit filtering” and “explicit filtering” as used in the context of the claims of the ’680 patent. See generally PO Resp. Thus, we do not discern any dispute between the parties regarding these terms. As construction of these terms is not necessary in order to resolve this proceeding, we do not explicitly construe these terms.” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “We do not agree. First and foremost, the Specification does not provide that this “metaphor” or “pictorial representation” is a limiting contrary. The Specification states: “While the library metaphor is a particularly useful personalized visualization of heterogeneous media, other useful visualizations are possible. Other possible visualizations include, for example, simple nested menus and an office and file drawer metaphor.” Id. at 5:11–15. Patent Owner does not explain, and we do not discern, how the alternative visualizations of “simple nested menus” or “an office and file drawer metaphor” support Patent Owner’s proposed construction. Second, the description of the “virtual library” metaphor in the Specification does not support Patent Owner’s proposed construction. With regard to that portion of Patent Owner’s proposed construction that provides “a personalized collection of information,” the same paragraph Patent Owner cites states, “The types of floors in the virtual library, the types of stacks populating each floor, and the specific media items on each of the stacks preferably are selected based on the user’s profile, although they may also be based on all of the information that is available to the metabrowser when the available information is a relatively small and manageable amount.” Ex. 1001, 3:10–15 (emphasis added). The alternative of displaying “all of the information that is available to the metabrowser,” as opposed to content “selected based on the user’s profile,” does not support limiting “virtual library” to require personalization.” slip op. at 13

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for petitioner

    “providing that a disclaimer of claim scope during prosecution must be clear and unmistakable. PO Resp. 5 (citing Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1325–26 (Fed. Cir. 2003) (“Although a patent’s prosecution history is relevant to the claim construction analysis, any disclaimer of claim scope based on prosecution history must be ‘clear and unmistakable.’”)). Patent Owner does not argue or explain how or why the passages it quotes from the prosecution history constitute a clear and unmistakable disclaimer. See PO Resp. 21–22. These passages were used by the Applicant in its patentability arguments. See Ex. 1002, 124, 125, 151, 153. In response to these arguments, the Examiner found the Applicant was arguing unclaimed features of the invention. Id. at 177–178. The Examiner wrote: As per Appellant’s argument that a meta-browser is not an obvious variant of a browser, Appellant is arguing matter not explicitly claimed in the claims of the specification. Appellant further argues that the claimed invention involves searching a multitude of sources, where Rapaport[17] teaches searching the single source of the Internet. However, Appellant does not distinguish in claims what that [sic] a multitude of sources are searched in addition to the Internet. Applicant further argues that the meta-browser “preferably monitors for data events even if the user engages in other activities such as…” Appellant continues to argue features not claimed in the claims of the specification. As per Appellant’s argument that the virtual library of the claimed invention searches outside the scope of the Internet and is more than just a text-based search engine, Appellant is arguing features not claimed in the claims of the specification. Id., see also id. at 367. And, on appeal from this rejection, this argument was evaluated and rejected by a predecessor of the Board, the Board of” slip op. at 18

  Patent outcomesUS 7,734,680 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,734,680

Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.